In this patent and copyright infringement case, plaintiff requested the production of customer communications regarding defendant’s purported “Prebate agreement” for a toner cartridge that was in issue. According to plaintiff, defendant had claimed that there were as many as 60,000 records on its “pre-sale customer inquiry database” that could be responsive to the request. In its motion to compel, plaintiff requested that defendant “back up” the database containing the requested documents and produce the database to plaintiff, with plaintiff to bear the burden of extracting any data so as to eliminate any undue burden on defendant.

Defendant argued that plaintiff’s motion to compel was moot for several reasons: (1) it had already produced the information to plaintiff for that portion of the database that was dated after November 2004, and (2) for that portion of the database that predated November 2004, it had offered to make the information available to plaintiff for its review and inspection at defendant’s facility, under certain terms and conditions, and that plaintiff had not availed itself of this offer. According to defendant, the reason why that portion of its database predating November 2004 was not produced to plaintiff was because defendant maintained its pre-sale customer inquiry database in a form that was not text-searchable, using software that was no longer commercially available and software which it modified for its own use. Therefore, defendant argued that “production of relevant records from Lexmark’s database prior to November 2004 in hard copy format was not reasonably possible.”

Defendant asserted that it had offered (on three occasions) to make its database predating November 2004 available to plaintiff under the following conditions: (1) at defendant’s facilities; (2) with the ability for plaintiff to print from the database (which printouts were to be left with Lexmark’s counsel for review, Bates-numbering and production thereafter); (3) all information in the database (because it is proprietary to Lexmark) would be treated as “Outside Counsel Only” per the Protective Order governing discovery in this case; and (4) access to the database was offered without waiver of the attorney-client privilege/work-product doctrine as to any material in the database. Defendant submitted that, since plaintiff did not avail itself of defendant’s offer concerning the pre-November 2004 database, plaintiff’s motion to compel was moot.

In reply, plaintiff countered that defendant’s proposed plan was unacceptable on several grounds, mainly because defendant had stated that “the only way to retrieve information from this database is by inputting a specific caller’s name, phone number, or call reference number (which is an internal designation created by Lexmark.)” Plaintiff pointed out that it did not have these names and numbers it would need to obtain any information from this database; therefore, “review” of this information on defendant’s terms would be fruitless, since it would be unable to gain “meaningful access” to the data.

The court stated: “The Federal Rules do not permit Lexmark to hide behind its peculiar computer system as an excuse for not producing this information to SCC.” It concluded that defendant was obligated to produce its pre-November 2004 database of information in a reasonably usable form for plaintiff. However, since that portion of the database was proprietary to the defendant, the court ordered that it should be categorized as “Outside Counsel Only” information and produced under the terms of the Protective Order governing discovery in the case.

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